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Chicago Team Wins Significant IP Case for Client Halo Creative & Design Against Comptoir Des Indes, Inc.

CHICAGO – Feb. 9, 2018 – A team of attorneys from the Chicago office of global law firm Greenberg Traurig, LLP have secured a permanent injunction in a patent, trademark and copyright infringement suit brought by firm client Halo Creative Design (Halo) against Comptoir Des Indes (CDI). The ruling issued on Feb. 6, 2018, by the U.S. District Court for the Northern District of Illinois is in furtherance of the prior week’s jury verdict in the suit Halo, of Hong Kong, filed against CDI of Montreal, Quebec, a furniture distributor and infringer, according to court documents.

At Greenberg Traurig, Halo was represented by Richard D. Harris, co-chair of the Chicago office Intellectual Property & Technology Practice and the firm's Global Patent Litigation Group, along with shareholder Barry R. Horwitz, and associate Jacqueline Brousseau.

“Achieving copyright protection for Halo’s contemporary furniture and lighting designs was less certain under the old ‘conceptual separability’ test for copyright protection in useful articles. That test, particularly as it was applied by the Copyright Office, was considered by many to be too rigid and biased against modern designs, but the U.S. Supreme Court overruled the test in March 2017,” Harris said, referring to the case Star Athletica v. Varsity Brands. “The District Court’s ruling in this case opens the door for other designers of high-end furniture and lighting products and other decorative ‘useful articles’ to protect their original contemporary designs against outright copying.”

According to Harris, the Jan. 29, 2018, verdict by a federal jury sitting in Chicago awarded Halo and its Creative Director Timothy Oulton a sweeping victory over CDI in a case involving Halo’s most iconic furniture and lighting designs. The case, filed in October 2014, involved two of Halo’s U.S. Design Patents, including one covering Halo’s award-winning Aviator Tomcat Chair, Halo’s Odeon™ trademark covering an entire line of cascading crystal chandeliers and lamps, and Halo’s nine copyrights in many of its other well-known and best-selling furniture and lighting designs, including Halo’s “caged” Gyro Crystal Chandelier. The jury found that CDI’s patent infringement, trademark infringement and copyright infringement were each knowing and willful.

The Court’s permanent injunction prohibits CDI from selling, offering for sale or promoting the infringing products within the U.S. According to the Court, that prohibition also extends to CDI’s e-commerce platform distributors that generate sales orders for the infringing CDI products for CDI to fill, after the permanent injunction was issued at 9:30 a.m. CST Feb. 6. The Court also entered an Order awarding Halo pre-judgment interest on the amount awarded by the jury, bringing Halo’s total damages award to nearly $US 3.8 million.

Emily Haslam, Halo’s General Counsel, said: “The Halo Group is sincerely gratified that the Federal Court and the Jury have recognized Halo’s intellectual property rights in its iconic furniture and lighting designs. This is a landmark case, for Halo, our legal team and the entire furniture and lighting design industry in the U.S. We are particularly pleased that the Court acknowledged and vindicated our copyright rights in many of our original furniture and lighting designs. Original designers should not have to stand by and watch copyists flood the global market with cheap imitations of their genuine products.”

About Greenberg Traurig

Greenberg Traurig, LLP (GT) has more than 2,000 attorneys in 38 offices in the United States, Latin America, Europe, Asia and the Middle East. GT has been recognized for its philanthropic giving, was named the largest firm in the U.S. by Law360 in 2017, and is among the Top 20 on the 2017 Am Law Global 100. Web: Twitter: @GT_Law.